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Challenging Trademark Rights After Five Years of Registration

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  • Post published:October 31, 2023
  • Post category:Trademark


Examining the Validity of Trademark Applications

In India, a framework for contesting the validity of a trademark registration is provided by the Trademark Act of 1999, especially in cases where the registration is younger than five years. This period is considered vulnerable due to issues related to distinctiveness, prior rights, or compliance with legal requirements. However, after the registration period exceeds five years, the legal assumption that the trademark has gained market awareness and uniqueness makes the procedure more difficult. The ease or complexity of contesting the validity of a trademark registration is largely dependent on its age. Although there are grounds for contesting more recent registrations, older trademarks are subject to a higher standard, which makes the procedure more difficult and involved. It is crucial to reply to trademark complaints promptly and effectively in order to preserve trademark protection, especially in the initial years following registration.

Inclusive Eligibility: Who Can Challenge Trademark Registration in India?

An essential component of India’s intellectual property laws is the ability to contest trademark registrations. A broad range of stakeholders can actively participate in preserving the integrity of the trademark system because of this inclusivity in eligibility. The Indian trademark registration system acknowledges the importance of protecting existing rights and ensuring fair competition. It categorizes individuals or companies with a vested interest in the removal of a specific registered trademark, which could stem from concerns about potential trademark conflicts, genuine worries about trademark infringement, or a desire to uphold fair competition. This group’s involvement emphasizes the principle of equity and the importance of protecting existing rights. Similarly, individuals or companies with damaged interests, such as market confusion, increased competition, or financial losses, may be negatively impacted by the presence of a registered trademark in the trademark journal. Being aware of this involvement is proof of the significance of equality and the importance of maintaining equal opportunities for the ones who suffer harm. Those who are more broadly interested in maintaining the fairness of the system than those who are directly impacted by the existence of a trademark are treated equally by the system. This strategy encourages the defence of individual rights while fostering a fair and competitive market.

Challenging a Trademark After Five Years of Registration

A trademark may be cancelled for a number of reasons once it has been registered for longer than five years, including:

  • Genericness: Registered trademark becomes a common term for goods or services; portion widely used.
  • Functional Use: Trademark primarily serves functional purposes.
  • Derogatory Nature: Registered trademark is offensive or derogatory.
  • Lawful Abandonment: The owner legally abandons the trademark.
  • Fraudulent Registration: Trademark registered through fraudulent means; not published as per the Trademark Act of 1999.
  • Deceptive, Scandalous, or Immoral: Registered trademark found to be deceptive, scandalous, immoral, or misused by the owner.

Revocation as a result of not using a registered trademark

Trademarks may be withdrawn if their owner stops utilizing them consistently for the goods or services for which they were originally registered for a period of five years or more. The trademark was formally registered in the trademark database on the day that these five years were being calculated. The provision for cancellation owing to non-use ensures that trademarks are actively and lawfully utilized in connection with the specified products or services, preventing trademark misuse and unnecessary clutter in the trademark registration process. The validity and integrity of registered trademarks are gradually safeguarded by this strategy.

Situations Where Non-Use of a Registered Trademark Does Not Lead to Cancellation

There are specific exceptions to the potential cancellation of a registered trademark in cases of non-use, provided the proprietor can offer valid reasons supported by evidence. The trademark laws of India outline three such scenarios in which the non-use of a registered trademark will not result in cancellation:

  • Transfer to a Company: If an individual intends to establish a company and subsequently transfer the trademark under the Companies Act of 2013, the law grants an exception for the non-usage of the trademark during this transitional phase.
  • Change of Ownership: In instances where the trademark owner aims to change the registration to another person’s name, the trademark cannot be cancelled due to non-use.
  • Non-Use Imposed by Law: If the non-use of the registered trademark is not due to the proprietor’s error but arises from specific commercial circumstances, such as legal restrictions or mandates, the trademark remains protected from cancellation.

Additionally, certain companies may face mandatory waiting periods for international or domestic approvals. During this interim phase, registered trademarks are excused from cancellation due to non-use. These exceptions ensure flexibility and accommodate legitimate reasons for non-use while preserving the overall integrity of the trademark registration system.

Key Considerations for Successful Trademark Cancellation

When seeking the cancellation of a trademark, there are several important considerations to bear in mind to ensure a successful outcome:

  • Application Form in Triplicate: The application form for trademark cancellation typically needs to be submitted in triplicate. This requirement helps maintain proper records and ensures that all concerned parties have access to the necessary documentation. It’s crucial to adhere to this administrative requirement to initiate the process effectively.
  • Comprehensive Petition: The cancellation petition must be comprehensive. It should clearly outline and explain all the details related to the trademark in question, including the grounds on which the cancellation is being sought. Providing a detailed account of the specific issues or reasons for cancellation is essential for a successful case.
  • Strong Supporting Evidence: To bolster the chances of a successful cancellation, the applicant’s arguments must be backed by strong, convincing evidence. This evidence may include documents, records, prior trademark rights, or any other pertinent information that substantiates the grounds for cancellation. Solid evidence lends credibility to the applicant’s claims and can sway the decision in their favour.


Legal assistance in the process of rescinding a registered trademark is provided by Kanakkupillai, a partner company. Kanakkupillai guarantees that their services are performed precisely and in compliance with the law because they have a thorough understanding of trademark laws and the most recent rules and regulations. Their dedication to following the law and knowledge of the Indian trademark system provides them with a big advantage when it comes to trademark cancellation. By selecting Kanakkupillai, you may confidently go through this difficult procedure and know that you’re never alone in your efforts to protect your rights and interests.


Telecom engineer turned content creator with a knack for crafting compelling narratives. Experienced in client management and community engagement, and ventured into freelance content creation, contributing tailored and impactful content across diverse industries. Currently, collaborating with companies like Kanakkupillai, dedicated to delivering inspiring technical content rooted in a solid foundation.